In recent years the Japanese IP High Court and the Board of Patent Appeals (BPA) at the Japan Patent Office have rejected many patent applications and also nullified many granted patents by simply using an obvious-to-try reasoning to prove obviousness. This has received heavy criticism from the industry and the bar groups in Japan.
Judge Iimura's Division at the IP High Court has also posed a serious question to the existing standard by denying the obvious-to-try reasoning as being improper and ruling that any claims may only be rendered as obvious if the prior art can be recognised to clearly suggest the claimed invention (IP High Court Case no Heisei 20 (Gyou-ke) 10096, handed down January 28 2009).
After this judgment, the IP High Court has reversed approximately 40% of the BPA's decisions to nullify patents – compared with only 20% during the same period last year.. Also, the IP High Court has only reversed approximately 20% of the BPA's decisions to maintain patents after judgment from Iimura's division, though the court nullified approximately 40% of patents in the previous year, even though the patents had been confirmed to be valid by the BPA.
This statistics might indicate a significant move towards a pro-patent stance at the IP High court. The IP High Court's previous behaviour and decision, which simply used an obvious-to-try reasoning as above, would have discouraged patent holders to bring a lawsuit against the infringers for fear that the patent may easily be made invalid as being obvious. In fact, more than 650 infringement lawsuits were newly filed with the Japanese Court in the 2004, but the number has substantially decreased and fewer than 500 lawsuits were newly filed in the year of 2008. This possible standard change, guided by Judge Iimura, might encourage the patent holders who could not be convinced of the obvious-to-try reasoning by the court as being rational.
The possible standard change might also have a substantial impact on future patent nullification proceedings at the JPO in which the petitioners seeking invalidation of patents would be required to formulate more precise arguments to establish the obviousness of the claims, e.g. in terms of problem-solution rather than simply using an obvious to try reasoning.
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| Makoto Ono |
Anderson Mori & Tomotsune
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makoto.ono@amt-law.com
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